Ex Parte Janarthanam et al

Patent Trial and Appeal Board

Sep 29, 2017

13955406 (P.T.A.B. Sep. 29, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/955,406 07/31/2013 Suriyaprakash A. Janarthanam 83382655 5884
28866 7590 10/03/2017
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
EXAMINER
JELSMA, JONATHAN G
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
10/03/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @ mstfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SURIYAPRAKASH A. JANARTHANAM and
MASAHIRO KIMOTO
Appeal 2017-001340
Application 13/955,406
Technology Center 1700
Before PETER F. KRATZ, GRACE KARAFFA OBERMANN, and
MICHAEL G. McMANUS, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1—13. We have jurisdiction pursuant to
35 U.S.C. §6.
Appellants’ claimed invention is directed to a vehicle including a
battery pack and a fan assembly having a housing with a motor mounted
directly behind the battery pack, wherein the fan housing includes flanges
having U-slots with downward facing slot openings.
Appellants disclose that the claimed arrangement allows for flexibility
in locating the cooling pack assembly while minimizing risk of battery pack
internal component damage from the cooling fan assembly, particularly from
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Application 13/955,406
the motor unit, during a vehicle rear impact event (Spec. 1 5). According to
Appellants, the term “directly behind” does not permit, inter alia, “offset to
the side” (Spec. 117).
Claim 1 is illustrative and reproduced below:
1. A vehicle comprising:
vehicle structure including a pair of opposed sides and a
rear, with a floor extending horizontally between the sides and
rear;
a battery-pack mounted above the floor;
a fan assembly having a housing with a motor mounted
therein directly behind the battery-pack, the housing including a
pair of flanges having U-slots with slot openings facing
downward;
fasteners extending horizontally through the U-slots and
secured to the battery-pack.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Koike et al. US 2008/0196957 A1 Aug. 21, 2008
Yoda US 2009/0120702 Al May 14,2009
Ferro et al. WO 2012/175859 A2 Dec. 27, 2012
The Examiner maintains the following grounds of rejection:
Claims 1 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yoda. Claims 1, 4—8, and 11—13 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Koike in view of Yoda. Claims
2, 3, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Koike in view of Yoda and Ferro.
We reverse the stated rejections. Our reasoning follows.
In the first stated rejection, the Examiner relies on embodiments of
Yoda as depicted in Figures 1, 2, 5, and 10 wherein a vehicle battery cooling
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Application 13/955,406
fan 31 is arranged on a top surface of a battery case 21 with the fan having a
U-shaped stay 36 or stays 61/62 that are horizontally disposed together with
additional teachings of Yoda with respect to the alternative of arranging the
fan on any surface of the battery case 21 (Final Act. 3^4; Yoda Tflf 30, 32—35,
63; Figs. 2,3,5, 10).1
The Examiner maintains that an ordinarily skilled artisan would have
been led to “attach the cooling fan assembly 31 directly behind the battery
pack ... in an orientation such that the U-slots with the slot openings facing
downward” because “this is a simple rearrangement of parts, as Yoda
teaches that the cooling fan may be provided on any surface of the battery
case” (Final Act. 4; Yoda Tflf 34, 35; Figs. 1—3).
As argued by Appellants, however, Yoda does not provide a teaching
or suggestion as to how any attachment stays would be employed and
oriented with Yoda’s general suggestion of mounting the fan assembly on
surfaces other than the top surface of a battery case and Yoda does not teach
that slot openings of a stay should face downward when the fan assembly is
attached on any particular battery case surface (App. Br. 8; Yoda 134).
Consequently, the Examiner’s conclusory obviousness determination based
on a “simple rearrangement” falls short in establishing that the subject
matter of claim 1 would have been arrived at by an ordinarily skilled artisan
based on the applied teachings of Yoda.
The Examiner has not otherwise furnished sufficient findings to
establish that “there are only four orientations that would be expected for the
1 The Examiner incorrectly states that Yoda’s stay 36 is shown as a U-
shaped slot with an opening facing downward in Figures 2 and 5 (Ans. 3; see
Ans.7; App. Br. 6).
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Application 13/955,406
fan to be with the corresponding directions of the U-slots of YODA” from
which one choice can be made (Ans. 7—8), as argued by Appellants (Reply
Br. 3). In particular, the Examiner has not established that a stay formed as
a U-slot with a downwardly facing opening would have been suggested to
one of ordinary skill in the art as part of a fan assembly housing for
mounting a fan on a rearward vertical surface of a battery case as one of four
choices based on the teachings of Yoda concerning the disclosed top
mounted fan assembly wherein horizontally oriented U-shaped stays are
employed as a qualified inserting portion coupled with the general
suggestion of other possible fan placement surfaces by Yoda.
As Appellants argue, stays with U-slot openings are not disclosed as
being used for a vertical surface attachment by Yoda (App. Br. 7, Reply Br.
3). In this regard, Yoda does not furnish any particular direction as to how,
and with what type of fastening elements, the fan would be mounted if it
were placed on any other surface of the battery case. Consequently, the
Examiner has not established that arriving at the claimed subject matter is
simply a matter of selecting one choice from a finite number of available
choices (Ans. 7—8; YodaTflf 34, 35; Figs. 1—5).
As stated in KSRInt’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007),
‘“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness’” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner has not otherwise carried the burden to address the
differences between the teachings of Yoda and the claimed subject matter
and adequately explain why, regardless of the differences, one of ordinary
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Application 13/955,406
skill in the art would have been led by the teachings of Yoda to a vehicle
with a battery pack, fan assembly, and attachment structures arranged as
required by Appellants’ claim 1.
Thus, the record indicates that the Examiner used impermissible
hindsight in rejecting the Appellants’ claims. See In re Warner, 379 F.2d
1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must
rest on a factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art”). Accordingly, we do not
sustain the Examiner’s first stated obviousness rejection.
The Examiner continues to rely on Yoda for the required flanges
having downward facing U—shaped slots in the second and third stated
rejections. In this regard, the Examiner finds that Koike, as utilized in the
second and third stated rejections, does not teach a fan housing including
flanges having downward facing U—slots as required by claim 1 and the
Examiner relies on Ferro for another feature required by certain dependent
claims in the third stated rejection (Final Act. 5—7).
As discussed above, the Examiner has not established that Yoda
furnishes sufficient teachings to overcome the deficiencies of Koike, with or
without Ferro, in order to establish the use of flanges with such slots as part
of a fan housing arranged in the manner as required by claim 1. Claim 8, the
other independent claim subject to the Examiner’s second rejection, requires
the downwardly facing U—slot feature and battery pack and fan assembly
arrangement features corresponding to claim 1.
It follows that we do not sustain the latter two rejections relying on a
base combination of Koike and Yoda for at least this reason, among others,
as argued by Appellants (App. Br. 8—14).
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CONCLUSION
The Examiner’s decision to reject the appealed claims is reversed.
REVERSED
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